Complainant is Bold Strategies, Inc. dba Obey Clothing of Los Angeles, California, United States of America (“United States”), represented by Sandidge IP, Inc., United States.
Respondent is Brandon Harden of Denver, Colorado, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2017.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 19, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a manufacturer, distributor and retailer of apparel, headwear, accessories and other merchandise. Complainant uses the trademark OBEY in connection with its products and claims to have used the mark continuously since at least as early as 2000. Complainant is the owner of numerous United States Trademark Registrations for OBEY mark, including the following:
Registration No. 4,263,319 issued December 25, 2012; Registration No. 4,569,752 issued July 15, 2014; Registration No. 4,859,555 issued November 24, 2015; Registration 4,859,374, issued November 24, 2015; Registration No. 5,018,200 issued August 9, 2016; Registration No. 5119, 705, issued January 20, 2017 and Registration No. 3,282,078 issued August 21, 2007.
Complainant also owns the domain name registration which it uses to provide information about Complainant and its products as well as offer its products for sale. Complainant’s OBEY products are sold exclusively through Complainant’s website and selected authorized retailers including national apparel stores, such as Tillys, Buckle and Nordstrom.
The disputed domain name was registered on May 12, 2017 and resolves to a website offering clothing items marked with “Obey” for sale. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name incorporated Complainant’s mark in its entirety, that Respondent has no rights or legitimate interests in respect of the domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established registered trademark rights in the mark OBEY. The disputed domain name incorporates the mark in its entirety except for the addition of the word “pants”. This adds no distinguishing feature, particularly in view of Complainant’s widespread use of the mark in connection with clothing.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. Respondent is not a licensee of Complainant’s trademarks and has not otherwise obtained authorization to use Complainant’s marks. Indeed, the website at the disputed domain name prominently displays the OBEY trademark and is apparently selling counterfeit products bearing the OBEY mark.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of registration and use of a domain name in bad faith. Circumstances that “shall be evidence” of bad faith include facts indicating an intentional attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with another’s mark as to the source, sponsorship, affiliation, or endorsement of the website.
The virtually identical nature of the disputed domain name to Complainant’s mark as well as the way it is used by Respondent to link to a website offering potentially counterfeit products bearing Complainant’s OBEY mark indicate that the disputed domain name was registered primarily for the purpose of disrupting the business of Complainant, and intended to take advantage of the goodwill associated with Complainant’s registered trademark by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the competing website at the disputed domain name. In view of Complainant’s registered trademark and longstanding use of the mark incorporated in the disputed domain name, Respondent knew or should have known about Complainant’s mark at the time it registered the disputed domain name.
The Panel finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: December 28, 2017
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